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Case Law of the Boards of Appeal

 
 
5.2.3 Multiple selection

In T 245/91 the appellants (patent proprietors) contested the respondent's lack of novelty objection in the light of the disclosure in a prior document. They contended that the subject-matter of claim 1 amounted to the purposeful selection of a small area from the very broad disclosure in the said document. The board observed that most of the ranges in claim 1 of the patent in suit could be obtained by narrowing down the ranges according to the cited document by approximately 25 to 80% and restricting them to their central portion, and that in a situation like this, where several ranges of parameters were to be considered, a careful comparison had to be carried out in order to assess whether or not the subject-matter of the claimed invention was available to the skilled person. Any obviousness considerations were to be strictly avoided. Referring to T 666/89 (OJ 1993, 495), the board emphasised that, under the Convention, novelty had to be decided by reference to the total information content of a cited prior art document. In the board's judgment, the combination of the relevant features would not have been seriously contemplated by the skilled reader and was not made available to him, because the said features were not prominent in the cited document and did not therefore lend themselves to an unambiguous, implicit disclosure. A further point to consider was the number of parameters used to define the claimed subject-matter, since each of the ethylene polymers was characterised by several parameters. The board held that, even if most of the ranges for these parameters corresponded to a more or less central portion of the range which limited the corresponding parameter in the composition according to the cited document, as a result of the number of parameters involved, which exceeded ten, the scope of the claimed blends was in reality quite narrow with regard to the breadth of the definition of the known composition. This was also the reason why the argument that there had been an implicit description of this narrow selection in the prior document was not accepted.

In case T 653/93, the appellant (applicant), whose application had been refused by the examining division, argued that the process of claim 1 was novel as it referred to a combination of three process features with selected ranges and product features with specific limits, a combination not disclosed in the prior art document.

The board of appeal emphasised that in such situations the question of novelty could not be answered by contemplating the ranges of the various parameters separately. This would, in the board's judgment, be an artificial and unjustified approach, since it was not the specified ranges of the three parameters or their agglomeration that formed the subject-matter of claim 1, but the group of processes defined by the combination of these ranges, which was rather small when compared with the group of processes disclosed in the prior art document. Thus the claimed group of processes, characterised by the combination of three specific process parameters, was not explicitly disclosed in the prior art document and therefore could be said to result from a "multiple (i.e. threefold) selection". The person skilled in the art, when applying the teaching of the prior art document, would not have had any reason to concentrate on the combination of the sub-ranges as defined in claim 1, e.g. because the omitted parts of the ranges disclosed in the prior art document could be recognised as of lesser interest. Since there was no indication to this effect, the "combined selection" did not emerge from the prior art document as being implicitly disclosed for the skilled person.

The novelty of the technical teaching of claim 1 was corroborated by experimental evidence showing that the products resulting from the claimed processes could not have been obtained by processes which were close to but nevertheless outside the range of the processes claimed. Moreover, the combination of properties of the products obtained by the claimed processes was not the inevitable result of the process disclosed in the prior art document but was obtained only by a particular combination of process parameters. It followed that the subject-matter of claim 1 was not considered as having been disclosed in the prior art document.

In T 65/96, there was no mention in prior art document D2 of a rubber­reinforced copolymer having the combined features forming the solution of the technical problem addressed in the opposed patent. The board pointed out that the argument of the appellant (opponent) that all the relevant parameters had been mentioned "within a few lines" was irrelevant, because the location within the document of a disclosure did not in itself suffice to show the true contextual relationship of the parameters, let alone establish that they were disclosed in combination, as required by the solution of the technical problem. In any case, one of the parameters was referred to in a quite separate section of the disclosure. Furthermore, closer examination of D2 showed that the parameters relating to the amount of rubber and the particle size of rubber, were merely disclosed as independent ranges without any indication as to how, or indeed whether, they might vary in relation to one another. Whilst it was conceded by the respondent at the oral proceedings that D2 disclosed ranges partly overlapping with those defined in the solution of the technical problem, the latter required the simultaneous fulfilment of three values of the same parameters.

The board came to the conclusion that the claimed solution was not arbitrary since it solved a specific technical problem compared with the products according to D2. Hence, the claimed solution, to the extent that it overlapped at all with the general disclosure of D2, represented a narrow selection therefrom and fulfilled all the requirements of a true selection (see T 198/84, OJ 1985, 209).